INTERNATIONAL TRADEMARK REGISTRATION FROM INDIA : STEP BY STEP PROCESS

Till recently for Indian companies to get trademark registered   in other countries, they  had to apply in each country separately. For this, they had to engage  attorneys in  each country, pay fees in each country  and   follow documentation requirements  specfic to each country.  It was time consuming and costly. Maintaining the registration thereafter was also difficult; as renewals in each country will be at different point of time. After India joining Madrid Protocol, now all these procedural hassles are removed to a great extent.  Now we can apply for international trademark registration through Indian trademark office.

 In order to apply for an International trademark the applicant or the agent ( attorney) should have a digital signature. The digital signature should be registered with the trademarks registry website http://www.ipindia.nic.in.  While doing so each applicant or agent (attorney) has to obtain a login ID and password. Before filing an international trademark application the applicant should have an Indian trademark application  or a trademark registration in India. Based on the Paris convention, if an applicant flies an international application within six months from the date of filing of the Indian trademark application, said international application will be considered as filed  on the Indian trademark application filing date.

Before filing an international trademark application, it would be appropriate for you to decide whether your logo or trade name, caption, shape of packaging or other trade symbols connected with your product or services are eligible for registration.  To get the trademark registered the mark should be distinctive and distinguishable from other trademarks. For this you need to do a search in all the relevant trademark registry databases to identify other similar or deceptive trademarks. To get registration mark should be a unique trade symbol that connect you with your products  and services.  While registering a trademark you should also consider, whether you should apply for colour images or for the black and white images of your trademark. A trademark in colour gives protection to those specific colours, whereas a black and white application covers all colours.

If you are engaging an attorney to file the trademark for you, you need to provide power of attorney in a prescribed format. The trademark law has classified various goods and services in to 45 classes. This is based on the international treaty called NICE agreement. You need to identify the appropriate classes relevant to the products and services offered by you. In some countries use of the trademark in that country is a prerequisite for registration.  But in most of the countries intent to use is sufficient. Once all these aspects are addressed then log on to http://www.ipindia.nic.in  and select the sub section” comprehensive e Filing services”  and login using your ID. International application should be filed in a prescribe format (form MM2E). Once the application filled appropriately,  you need to file the application online.  The Indian trademarks registry will charge 2000/- as application fee. While making this international application you need to select the countries  where you wish to get the trademark registered. Once all formal requirements are met, Indian trademarks registry will forward the application to World Intellectual Property Organization (WIPO).  WIPO will issue a demand notice asking the applicant to pay the international filing fee. International filing fee is in Swiss frank (653/- where no reproduction of the mark is in color, Swiss franc 903/-where any reproduction of the mark is in color and  100/- as Complementary fee for the designation of each designated Contracting State). International bureau of WIPO thereafter forwards the international application to the concerned countries where you opted for registration. In addition to the international filing fee you need to pay the national trademark filing fee of each country where you want the registration. The current trademark fee  of each country is as below.

Country                                                                                Amount in Swiss francs

Armenia

221
22

for one class
for each additional class
Australia

407

for each class of goods or services
Bahrain

274
274

for one class
for each additional class
where the mark is a collective mark or a certification mark:

297
297

for one class
for each additional class
Belarus

600
50

for three classes
for each additional class
Benelux

211
21

for three classes
for each additional class
where the mark is a collective mark:

301
21

for three classes
for each additional class
Bonaire, Saint Eustatius and Saba

195
20

for three classes
for each additional class
where the mark is a collective mark:

279
20

for three classes
for each additional class
Bulgaria

376
25

for three classes
for each additional class
where the mark is a collective mark or a certification mark:

683
62

for three classes
for each additional class
China

249
125

for one class
for each additional class
where the mark is a collective mark:

747
374

for one class
for each additional class
Colombia

387
193

for one class
for each additional class
where the mark is a collective mark or a certification mark:

516
258

for one class
for each additional class
Cuba First Part:

274
91

for three classes
for each additional class
where the mark is a collective mark:

320
91

for three classes
for each additional class
Second Part:

82

independent of the number of classes
where the mark is a collective mark:

82

independent of the number of classes
Curaçao

272
28

for three classes
for each additional class
where the mark is a collective mark:

540
55

for three classes
for each additional class
Denmark

419
107

for three classes
for each additional class
Estonia

176
56

for one class
for each additional class
where the mark is a collective mark:

240
56

for one class
for each additional class
European Union

1111
192

for three classes
for each additional class
where the mark is a collective mark:

2070
383

for three classes
for each additional class
Finland

279
100

for three classes
for each additional class
where the mark is a collective mark:

378
100

for three classes
for each additional class
Georgia

314
115

for one class
for each additional class
Ghana First Part:

129
129

for one class
for each additional class
Second Part:

86
86

for one class
for each additional class
Greece

133
24

for one class
for each additional class until the tenth class
where the mark is a collective mark:

663
120

for one class
for each additional class until the tenth class
Iceland

180
41

for one class
for each additional class
where the mark is a collective mark:

180
41

for one class
for each additional class
India

61

for each class of goods or services
where the mark is a collective mark or a certification mark:

175

for each class of goods or services
Ireland

325
93

for one class
for each additional class
Israel

386
290

for one class
for each additional class
Italy

121
41

for one class
for each additional class
where the mark is a collective mark:

403

independent of the number of classes
Japan First Part:

114
87

for one class
for each additional class
Second Part:

380

for each class of goods or services
Kyrgyzstan

340
160

for one class
for each additional class
Mexico

193

for each class of goods or services
New Zealand

115

for each class of goods or services
Norway

345
107

for three classes
for each additional class
where the mark is a collective mark:

345
107

for three classes
for each additional class
Oman

484
484

for one class
for each additional class
where the mark is a collective mark or a certification mark:

1211
1211

for one class
for each additional class
Philippines

107

for each class of goods or services
Republic of Korea

233

for each class of goods or services
Republic of Moldova

307
64

for one class
for each additional class
where the mark is a collective mark:

370
64

for one class
for each additional class
San Marino

178
47

for three classes
for each additional class
where the mark is a collective mark:

320
83

for three classes
for each additional class
Singapore

272

for each class of goods or services
Sweden

322
126

for one class
for each additional class
Switzerland

350
50

for three classes
for each additional class
Syrian Arab Republic

116

for each class of goods or services
Tajikistan

420
16

for one class
for each additional class
Tunisia

155
20

for one class
for each additional class
Turkey

248
49

for one class
for each additional class
Turkmenistan

178
90

for one class
for each additional class
Ukraine

429
86

for three classes
for each additional class
United Kingdom

262
73

for one class
for each additional class
United States of America

301
301

for one class
for each additional class
Uzbekistan

1028
103

for one class
for each additional class
where the mark is a collective mark:

1543
154

for one class
for each additional class
Viet Nam

101
84

for one class
for each additional class

The new mechanism will provide substantial savings in terms of money and time. The management of your trademarks becomes easier as you can renew the trademark registration in all the countries  in a similar manner by filing a single request to WIPO.

By Rajesh Vellakkat

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